[Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9
Kathy Kleiman
kathy at kathykleiman.com
Wed May 15 13:12:07 UTC 2019
Claudio, I think you have just brilliantly made the case for why
Michael's proposal does not hurt trademark owners, but does harm the
"gamers" who are using their trademark registrations for "the" and other
common, ordinary words to misuse the Sunrise Period.
Best, Kathy
On 5/9/2019 1:42 PM, claudio di gangi wrote:
> Michael,
>
> Agreeing with Brian, and just adding some further context below to the
> extent helpful.
>
> I think the main issue with this discussion is that the use of a
> generic top-level domain is not limited to the semantic meaning or
> implication of the string (unless the Registry decides to restrict its
> registration policy to a certain community, industry, geographic
> region, etc.).
>
> This is the primary reason why there is no constituted ‘expansion of
> trademark rights’ when the trademark owner registers a
> trademark-corresponding domain name in the gTLD, whether during
> Sunrise or General Availability, because the use of the gTLD is not
> restricted to certain goods/services, and is open to various
> interpretations and forms of use.
>
> The fact that the gTLD is open for any form of use that may be
> unrelated to the semantic meaning of the string is the main reason why
> it’s helpful for trademark owners to maintain the option to apply for
> a registration during Sunrise, even when for the sake of argument, the
> gTLD does not appear directly correlated to the industry, product,
> class of goods, of the trademark owner.
>
> In other words, cybersquatters register third-party trademarks in
> those types of gTLDs for a several reasons, such as: (1) trademark
> owners have limited budgets and are usually forced to protect their
> trademark in gTLDs where there is a direct or indirect connotation or
> semantic relationship between the gTLD and the organization’s brand
> (and/or several other factors which makes the gTLD a target for
> registration abuse); (2) this leaves the remaining gTLDs more of an
> open target for cybersquatting the brand.
>
> As a result, this type of approach to defensive registrations leaves
> cybersquatters with two main options: (1) register typographical
> variations of the trademark, or add additional terms to the trademark,
> in gTLDs where there is a indirect or direct relationship between the
> semantic meaning of the gTLD and the trademark; 2) register the
> trademark (and permutations) as a domain name in a different gTLD
> where the trademark owner did not register their trademark as a domain
> during Sunrise.
>
> So we see a combination of both of practices in new gTLDs, at either
> the same or a higher rate of cybersquatting compared to legacy
> domains. This makes Sunrise a needed option for the purposes
> mitigating against registration abuse and to help protect consumers
> from the harms that follow from these illegal schemes.
>
> With that said, of course this doesn’t mean that brand owners are
> going to utilize the Sunrise RPM across the board. In practice,
> because of limited budgets and the expense/costs of the registrations,
> I believe the average number of Sunrise registrations in new gTLDs is
> between 100 and 200 registrations per registry. This leaves the vast
> majority of possible permutations of domains available for good faith
> registration by third parties (or by cybersquatters).
>
> But in some cases, the brand owner will register in a specific new
> gTLD (where the semantic meaning doesn’t appear directly related at
> first glance), but the trademark owner is aware of other factors or
> reasons - for example, the fame of the mark, or previous cases of
> registration abuse when they have been targeted in a certain manner -
> to justify the expense of registering the domain name defensively in
> that specific gTLD.
>
> Yes, when you add up the totals for a specific company, it can come to
> a very large imposed expense, but since the defensive registrations
> are spread out across so many different registries, in any particular
> gTLD you will only see a limited number of Sunrise registrations.
>
> I hope the combination of these various factors makes the issue of
> lesser concern from your perspective . Also, importantly as Brian
> noted, there have been expressions of interest within the Subteam to
> review the SDRP policy to see if we can make incremental improvements,
> while maintaining the balance of interests. I am happy to work with
> you and others on this effort going forward.
>
> Best regards,
> Claudio
>
>
>
> On Thursday, May 9, 2019, BECKHAM, Brian <brian.beckham at wipo.int
> <mailto:brian.beckham at wipo.int>> wrote:
>
> Michael,
>
> I would personally prefer not to get into a Google search race for
> some kind of “exceptions to prove the rule” and also because
> “tattoos” is not a class of marks
> <https://trademark.eu/list-of-classes-with-explanatory-notes/>,
> but these articles could be of interest in terms of explaining why
> they may seek such a defensive sunrise registration:
>
> https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/
> <https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/>
>
> https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-win-car-632961/
> <https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-win-car-632961/>
>
>
> Also, while MINI may not make motorcycles, their sister company
> BMW does, so they could well branch out into that product area
> (including related services).
>
> I have already suggested improvements to the SDRP on several
> occasions, going back almost 2 years now (those were apparently
> parked in preference of various data seeking exercises), so would
> respectfully suggest that others take the baton from here.
>
> As I said, I believe there is a genuine willingness to explore
> such solutions.
>
> At the same time, it seems unlikely that the current proposal No.
> 13 is likely to garner consensus, and will defer to the Sub Team
> Co-Chairs to address that at the level of our present discussions.
>
> Brian
>
> *From:*Michael Karanicolas <mkaranicolas at gmail.com
> <mailto:mkaranicolas at gmail.com>>
> *Sent:* Thursday, May 9, 2019 5:50 PM
> *To:* BECKHAM, Brian <brian.beckham at wipo.int
> <mailto:brian.beckham at wipo.int>>
> *Cc:* Ariel Liang <ariel.liang at icann.org
> <mailto:ariel.liang at icann.org>>; gnso-rpm-sunrise at icann.org
> <mailto:gnso-rpm-sunrise at icann.org>
> *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9
>
> Interesting, thanks for sharing. I checked whether Mini made
> motorcycles before I sent my proposal in... I didn't think to
> check whether they made regular bicycles!
>
> By any chance, were you able to find any examples of the company
> branching into the tattoo business as well (http://mini.tattoo)?
>
> I'm not sure if this presents a "nuance" in trademark classes. I
> don't think it's much of a revelation that "bikes" can refer to
> motorcycles or regular bicycles. All this represents is a product
> line I was unaware of. And under my proposal, all Mini would have
> to do would be to include the link you provided when they register
> the domain under sunrise, and that should be that.
>
> Personally, I don't see how the SDRP challenge process could be
> retooled to turn it into something that adequately represents the
> interests of potential future registrants without injecting
> massive amounts of transparency into the sunrise and TMCH
> processes... but I would be interested to hear your thoughts as to
> how this might work.
>
> On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian
> <brian.beckham at wipo.int <mailto:brian.beckham at wipo.int>> wrote:
>
> Thanks Ariel,
>
> Copying here, my full email to the Sunrise List from earlier
> today as it relates to proposal No. 13:
>
> --
>
> Thanks Julie,
>
> Just for fun (as I am aware the example was merely anecdotal),
> further to our hypothesizing last night, indeed, MINI does
> have a range of folding bikes:
>
> https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/
> <https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/>
>
> This does however illustrate in some ways the nuance in
> trademark classes and TLD typology that may escape proposal
> No. 13 in its current form.
>
> As I mentioned on our call, I believe there is a shared
> willingness to address the issue Michael has raised, but via
> the SDRP challenge process, and not via claims exclusions.
>
> Brian
>
> --
>
> Brian
>
> *From:*Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces at icann.org
> <mailto:gnso-rpm-sunrise-bounces at icann.org>> *On Behalf Of
> *Ariel Liang
> *Sent:* Thursday, May 9, 2019 5:36 PM
> *To:* gnso-rpm-sunrise at icann.org
> <mailto:gnso-rpm-sunrise at icann.org>
> *Subject:* [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9
>
> Dear Sunrise Sub Team members,
>
> As announced, this thread is being opened for final mailing
> list discussions related to *Sunrise Agreed Charter
> Question**9*, including *Proposal #13*.
>
> We ask that you review the *Summary Table* *(as of 16 April
> 2019) *and provide any additional input you may have to the
> “*proposed answers & preliminary recommendations*” in relation
> to the Agreed Charter Question, and consider *draft answers
> *to the following questions regarding the individual proposal:
>
> a. Should the Sub Team recommend that the full WG consider
> including this Individual Proposal in the Initial Report for
> the solicitation of public comment?
>
> b. In light of the Individual Proposal, are any modifications
> to the current “tentative answers & preliminary
> recommendations” needed?
>
> c. Should any additional Sub Team recommendations be made in
> relation to the agreed Sunrise charter question?
>
> Unless the Sub Team Co-Chairs determine otherwise, this
> discussion thread will remain open until *23:59 UTC on **22
> May 2019*. Comments/input provided past the closing date or
> outside this discussion thread will not be taken into account
> when compiling the final Sub Team member input.
>
> *Summary Table (Pages 36-40)*
>
> The draft answers, preliminary recommendations, and links to
> the relevant individual proposals are in the latest Summary
> Table (as of 16 April 2019):
>
> https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summary%20Table%5D%20%2816%20April%202019%29.pdf?version=1&modificationDate=1555515624235&api=v2
> <https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summary%20Table%5D%20%2816%20April%202019%29.pdf?version=1&modificationDate=1555515624235&api=v2>.
>
>
> *Agreed Sunrise Charter Question **9**(Page**36)*
>
> The Sub Teamjustdiscussed Agreed Charter Question 9on 08 May
> 2019, hence the proposed answers are “TBD”. Based on the Sub
> Team’s discussions, the transcript and notes, staff will
> provide update.
>
> /
> Q//9 In light of the evidence gathered above, should the scope
> of Sunrise Registrations be limited to the categories of goods
> and services for which? /
>
> *_Proposed Answer_**: *TBD
>
> *Individual Proposal*
>
> The Sub Team just discussed the Proposal #13 on 08 May 2019,
> hence there is no draft answer currently on the Summary Table
> (as of 16 April 2019). Based on the Sub Team’sdiscussions, the
> transcript and notes, staff will provide.
>
> Link to the individual proposal is included below.
>
> *Proposal
> #**13*:https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf?api=v2
> <https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf?api=v2>
>
>
> *Where to Find All Discussion Threads***
>
> Access the Documents wiki page and find the opening messages
> of the all discussion threads in the table (highlighted in
> green): https://community.icann.org/x/_oIWBg
> <https://community.icann.org/x/_oIWBg>
>
> Best Regards,
>
> Mary, Julie, Ariel
>
> World Intellectual Property Organization Disclaimer: This
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